Biswajit Sarkar Advocates - IP Attorneys India

Biswajit Sarkar Advocates - IP Attorneys

Posted by: Biswajit Sarkar Advocates - IP Attorneys
Practice Area: Trademark    Country: India    Publish Date: 19-Sep-2022


A trademark is a symbol, design, orexpression that aids in the recognition and identification of a certain productor service created or given by specific manufacturers or service providers. Itdistinguishes one set of goods or services from others. A trademark can beapplied to a certain product, testimonial, or marker. This blog will walk youthrough the stages of trademark registration, and the specific provisionsrelated to the trade mark registration in India.

What is the objective of the Trademark Act of1999?

Ø  The Trade Mark Act was created to achieve thecommon good of "consumer protection."

Ø  The primary goal of trademark registration isto avoid the public at large from being deceived about the source or quality ofan item or service.

Ø  It also intends for a registered trademark toserve as a motivator for a manufacturer, provider, or supplier topreserve their public image.

What kind of trademarks can be registered?

Any visually representable (on paper) term,symbol, device, mark, number, or color combination may be filed for trademarkregistration. Additionally, the proposed trademark registration must be uniquefor the goods or services it is intended to cover.

What kind of trademarks cannot beregistered?

Any trademark that is identical orconfusingly similar to a trademark that has already been registered or forwhich a registration application has been submitted and is pending isineligible for registration.

It is improper to register a trademark thatdeceives customers, causes confusion, or is offensive. Furthermore,geographical names, acronyms, common names, and popular commercial phrases arenot eligible for trademark registration.

When is the ideal time to register atrademark?

Since a trademark can take up to three yearsto successfully register, barring third parties, the trademark registrationprocedure is first-to-file, thus it should be started as soon as possible. Thetrademark application process and its length are covered in Chapter III of theTrademarks Act of 1999.

Who can apply for a trademark registration?

Any person i.e., an individual, companies,sole proprietorship, and any other companies can apply for a trade markregistration in India and will be referred to as the Applicant in theapplication of trademark registration. Further, once the mark has beenregistered, the applicant will be referred to as the owner of the mark.

What steps should be followed for thetrademark registration process in India?

Step 1 - Choosing an Indian trademark lawyer

Only the Proprietors are entitled to registerfor trademark registration if their primary place of business is in India. Ifthe circumstances are different, a mediator such as an agent or an attorneywill be appointed to submit the application on the right holder’s behalf. Theminor details are often handled by the agent or attorney.

Step 2 - Select a trademark that iseligible

If a given trademark does not resemble anypreviously registered trademarks with the comptroller general's office, itmeets the eligibility requirements. Additionally, the trademark ought to bedistinctive. The agent typically begins the enrolment procedure by establishingif the trademark is suitable for enrolment and carrying out a clearance searchto discover if the comptroller general's office already owns a mark that iscomparable.

Step 3 – Conducting a proper public search

Once the parties have chosen a mark for theirbusiness, then the primary step is to conduct an effective public search, tocheck that there are no similar marks already registered in the trademark’sregistry. The search is conducted with reference to the Nice classification, inwhich there is a detailed mentioning about the goods and services, for whichthe mark is to be applied for trademark registration.

Step 3 - Completing the application form andsubmitting it

If the owner of the trademark gives the agentpower of attorney, the agent may complete the application by providing theinformation needed to explain the services and goods that will be associatedwith the mark as well as the owner's information in the form of a useraffidavit.

Either offline (at the trademark office) oronline submission of the application of trademark registration is possible. Ifthe application is submitted online, a Class III Certificate of DigitalSignature is necessary.

Step 4 - The trademark office reviews and assigns a uniquenumber.

After reviewing the application, thetrademark office staff assigns it a unique number. If the trademark isregistered, this number subsequently serves as the registration number.

Step 5 – Examination of the mark by theExaminer

The Examiner after receiving the applicationof trademark registration, will then proceed with the further examination ofthe mark, that takes about an approximate time of 2 months. In circumstances,if the Examiner is not satisfied with the mark, then he subsequently issues anexamination notice to the authorized agents on record of the trademarksregistry website, and mentions the provisions of section 9 and 11, if any, inthat particular examination report.

After the issuance of the examination report,the owner of the trademark has to send a letter as a reply to the examinationreport within 1 month of the issuance, so that the mark further proceeds forpublication in the journal.

After taking into account the ExaminationReport, the Registrar shall accept the registration application. Accordingto Section 20(1) of the Trade Marks Act of 1999, the applicant must be informedof this acceptance, and it must also be publicized.

The applicant must respond within one monthof receiving the Examination Report and communicating it to the applicant. Ifhe doesn't, the application would be dismissed.

If the applicant responds to the examinationreport within that time frame, the registrar will decide whether to accept theapplication, notify the applicant, and promote it.

Step 5 – Advertisement of the mark

The step of publication of the trademark inthe journal has been incorporated in the trademark registration procedure withthe purpose that if any third-party objects to the registering of the trademarkbeing deceptively similar to the mark, then they further have the right tooppose the mark within four months of the publication of the mark in theJournal.

If, after four months, from publication thereis no opposition then the Registrar would further proceed for the registrationof the mark, and accept it, followed by its registration.

The trademark manuscript and trademarkregistration certificate must thereafter be created. Following the issuance ofthe Certificate, the applicant is given exclusive use of the trademark andbecomes its legal owner.

To summaries, after going through the completetrademark registration process, it is clear that registering your trademark isimportant/required since you may enjoy unlimited benefits in the form of Rights,and no third party can breach your brand or monetarily misuse your goods orservices.

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